LJN Newsletters

  • Strategic Considerations for Inter Partes Re-examination

    The cost of patent litigation is enormous, and continues to increase. According to the 2003 AIPLA survey, the median cost for a patent litigation with less than $25 million at stake was close to $2 million. Furthermore, many large companies are increasingly coming under attack from small patent holders or patent holding companies. Because of these developments, the inter partes re-examination procedure is becoming an increasingly attractive alternative for patent defendants. However, the inter partes re-examination procedure carries its own risks. As discussed further below, the advantages and disadvantages should be carefully weighed prior to instigating an inter partes re-examination.

    August 01, 2005Adam D. Sheehan

  • Are Experts Required?

    One of the first things that a party does when planning a patent litigation or when sued for patent infringement is hire a phalanx of experts. However, what gets lost in the equation is the preliminary questions of "are all of these experts necessary?" and "will their testimony be accepted by the court?"

    August 01, 2005Benjamin Hershkowitz and Mark Raskin

  • Recent Court Decisions Regarding Actual Notice of Patent Infringement

    Consider the following hypothetical situation. Mr. Jones, an engineer with your Company XYZ, informs you that a supplier for XYZ saw a rival company's Product X, which appeared quite similar to the one currently in development at XYZ. Mr. Jones tells you that representatives of XYZ had mentioned that Product X is patented. Should you (a) disregard what Mr. Jones has told you, (b) await word from attorneys for Product X, (c) contact attorneys for Product X to discuss possible infringement issues, or (d) request a formal opinion from outside counsel?

    August 01, 2005Patrick Fay and Anita Chang

  • A Bow to Innovation: The Supreme Court's Decision in MGM v. Grokster

    The Supreme Court's recent decision in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., ___ U.S. ___, 125 S.Ct. 2764, 75 U.S.P.Q.2d 1001 (2005) is noteworthy for the Court's decision to sidestep modifying the standard that the Court set in the Sony case in 1984 as to when a product distributor can be liable for infringing uses of its product. Although the Supreme Court was faced with compelling arguments from copyright owners and the technology industry alike both for and against modifying the standard in Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984), it ultimately found that Grokster and its co-defendant StreamCast could be liable for infringing downloads, not because they distributed a product that was used to infringe copyrights, but because they took the additional step of actively inducing their users to download copyrighted material. In so doing, the Supreme Court avoided deciding whether it was appropriate that a mere distributor of a product "capable of substantial noninfringing use" should avoid liability even when its product is being used for massive copyright infringement.

    August 01, 2005Michael R. Graif

  • Can You Fire an Employee for Blogging?

    What employees do on their own time is their own business, right? Except when you think it may adversely impact your business. It's one thing for an employee to harbor extreme political views. It's another thing to blog them to the world. An employee's private sex life is, well, private. But what if an employee blogs his or her sexual fantasies to the world? Does an employer have the right to take action against an employee for off-duty blogging it finds offensive or otherwise problematic?

    July 29, 2005Jonathan A. Segal

  • Domestic Violence in the Workplace

    It seems that we read news stories almost daily about estranged husbands and boyfriends hunting down women at work, and ultimately killing these women before committing suicide. The "spillover" of domestic violence into the workplace is a widespread phenomenon and one that employers must acknowledge and deal with. It is not simply a private family issue. It cannot be minimized or ignored. The workplace is an easy place to find someone, which enables estranged partners to harass, stalk and sometimes kill their victims at work.

    July 29, 2005Susan L. Pollet

  • IP News

    Highlights of the latest intellectual property news from around the country.

    July 29, 2005Compiled by Eric Agovino

  • Merck KGaA v. Integra Lifesciences I, LTD Uncertainty in the Scope of the Section 271(e)(1) Exemption

    On June 13, 2005, the Supreme Court in Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. ___, 2005 WL 1383624 (2005) ruled that the safe-harbor infringement exemption of 35 U.S.C. '271(e)(1) may apply to non-clinical research on a patented compound as long as there is a reasonable basis to believe that the compound tested could itself be the subject of an FDA submission or that experiments with the compound will produce the kinds of information relevant to an Investigational New Drug Application ("IND") or a New Drug Application ("NDA"); the exemption may apply even though the patented compound never itself becomes the subject of an FDA submission or the experimental results arising from its use never reported in a submission. The decision reversed the holding of the Federal Circuit (331 F.3d 860 (Fed. Cir. 2003)) that the exemption applies only to research used to obtain information that is submitted to the FDA as part of an application for regulatory approval. The Court expressly refused, however, to consider whether '271(e)(1) might exempt "research tools" from infringement liability. Although the Court interpreted the reach of the '271(e)(1) exemption broadly, the issue of whether use of patented research tools falls within it remains unresolved.

    July 29, 2005Gary H. Levin, Patrick J. Farley and Chad Ziegler